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Lessons from the USPTO's forum on subject matter eligibility

On January 21, 2015, the United States Patent and Trademark Office (USPTO) held a public forum (Eligibility Forum) to discuss recent developments in subject matter eligibility, particularly the USPTO’s 2014 Interim Eligibility Guidance. Here we summarize some of the important points that were raised during the Eligibility Forum. For further discussion of the Interim Guidance and its details, please see the Client Alert and expanded analysis that we released shortly after the publication of the Interim Guidance. The Eligibility Forum reinforced the points we made in our analysis.

Leading the Eligibility Forum were five USPTO officials: deputy commissioner Drew Hirshfeld, senior legal advisors Caroline Dennison and Raul Tamayo of the Office of Patent Legal Administration, and technology center directors Jerry Lorengo and Greg Vidovich. Also participating in the Eligibility Forum, both in person and through the Internet, were members of the patent community, including patent practitioners from different technology areas. The Eligibility Forum schedule consisted of three parts: (1) the USPTO’s brief overview of the Interim Guidance, (2) public presentations by 19 of the participants, and (3) a Q&A session.

The participants generally agreed that the Interim Guidance is an improvement over previous subject matter eligibility guidelines, but challenges and shortcomings remain. Below are some highlights from the Eligibility Forum.

What is the “streamlined eligibility process”? In drafting the Interim Guidance, the USPTO tried to reduce the number of claims that require full subject matter analysis, e.g., moving from step 2A of the Interim Guidance (Mayo part 1) to step 2B of the Interim Guidance (Mayo part 2). To that end, in step 2A, the Interim Guidance asks whether the claim, as a whole, is “directed to” or sets forth a judicial exception. If not, the claim should enter the “streamlined process” in which the claim bypasses the rest of the section 101 subject matter eligibility analysis and moves on to other analyses of patent eligibility (e.g., under sections 102, 103, or 112). The streamlined analysis applies not only to claims that are analyzed under the nature-based exceptions (products or laws of nature), which have been the focus of most of the USPTO examples so far, but also to claims that are analyzed under the abstract idea exception, for which the USPTO will soon publish a new set of examples.

When to apply the “markedly different” analysis? The Interim Guidance introduced into step 2A the search for “markedly different” characteristics when a claim is directed to a nature-based product. Markedly different characteristics include not only structural differences (as used in some prior guidelines), but also other types of differences such as functional differences. Unlike prior guidelines, the Interim Guidance separated the marked difference inquiry from the search for elements that add “significantly more” to the judicial exception, which occurs in step 2B (Mayo part 2). The markedly different analysis has eliminated the multi-factor analysis of the March 2014 Mayo/Myriad Guidance. A non-limiting list of characteristic types that may identify marked difference, as derived from case law, includes biological and pharmacological functions or activities; chemical and physical properties; phenotypes; and structure and form.

Examiners must articulate the rejection and conduct compact examination. The participants pointed out, and the USPTO did not disagree, that in subject matter eligibility rejections, as in all other types of rejection, the examiner bears the initial burden of articulating the grounds of rejection. For example, if an examiner rejects a claim as directed to an abstract idea, the examiner is required to, among other things, clearly state what the alleged abstract idea is and why it qualifies as an abstract idea. To that end, the examiner should be required to use the categories of abstract ideas enumerated by the Interim Guidance and, when necessary, present further evidence (such as citing extrinsic evidence for the proposition that a concept is “fundamental” or “long standing”). Further, the USPTO noted that examiners must conduct a compact examination process. That is, examiners should not stop the analysis after rejecting a claim as subject matter ineligible, and should instead identify and present all possible issues with patent eligibility, such as those raised under sections 112, 102, and 103.

The participants noted several shortcomings in the Interim Guidance and the examination process. The USPTO generally acknowledged the shortcomings and announced specific plans to address some of them.

Upcoming examples for abstract idea analyses: The Interim Guidance needs more clear definitions and examples of difficult concepts, such as “abstract idea.” The USPTO announced that it will soon publish examples related to the abstract idea exception.

Examiner training: The complexity of the analysis calls for clear guidance to and training of the examiners. The training of the 8500 USPTO examiners is about to start and is planned to be complete by the end of February 2015. The USPTO will continue the iterative process of seeking and considering input from the patent community. Particularly, the comment period for the Interim Guidance extends to March 16, 2015.

Lack of rigor in 101 analysis: The Interim Guidance and, generally, the examination process for subject matter eligibility, need more rigor to reduce rejections that are subjective or at will, and for those reasons are difficult to address. Adding rigor may call for pointed guidelines and procedures, similar to the processes and forms used for analyses of novelty (under section 102) or non-obviousness (under section 103). The USPTO agreed that such procedures and forms should be provided down the road.

Cost of uncertainty: Uncertainties in the law have caused unclear and non-rigorous rejections of applications in different technologies. These rejections cause uncertainty among stakeholders about protecting their rights to their inventions, and result in extra costs of prosecution for those stakeholders. The USPTO acknowledged the problem and indicated some remedies. For example, a rejection that is based solely on newly raised grounds of subject matter ineligibility cannot be made final. Moreover, when facing a weak rejection and unresponsive examiner, applicants are encouraged to escalate the issue to the examiner’s supervisory patent examiner (SPE) or even the director of the corresponding technological area.

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